Banerjee, Arpan. (2014). Spill-over reputation in passing off actions: Indian and english law compared. Oxford University Commomwealth Law Journal, Vol 14 No 1: 21-45

Abstract:

The 'classical trinity' of requirements for a successful passing off action are (1) a reputation (or goodwill) acquired by the plaintiff in his goods, name, mark, etc., (2) a misrepresentation by the defendant leading to confusion (or deception), causing (3) damage to the plaintiff. For a plaintiff who does not actually carry on business in a country, demonstrating goodwill in that country is difficult. Frequently, all that such a plaintiff can demonstrate is the plaintiff's reputation transcending borders and spilling over into that country through advertising and other methods. This article compares the approaches of English and Indian courts on this topic. In England, most judges have regarded spill-over reputation alone as insufficient to succeed in a passing off action. However, judges in India have taken the opposite view. The article discusses the implications these differing approaches have for foreign traders. The article argues that the Indian approach is preferable to the English approach.